LUMENYTE International Corporation v Light Transmission Cables Pty Ltd

official notice

decision of a delegate of the commissioner of patents

Application : No. 592654 in the name of LUMENYTE INTERNATIONAL CORPORATION.

Title: Method, Apparatus and Composition of Matter for a High Temperature Plastic Light Conduit.

Action: Opposition under section 104(4) by LIGHT TRANSMISSION CABLES PTY. LIMITED, and a request to dismiss the opposition under regulation 5.5.

Decision: Issued . Parties did not attend hearing; no grounds for dismissing opposition under regulation 5.5.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 592654 by LUMENYTE INTERNATIONAL CORPORATION , an opposition under section 104(4) by LIGHT TRANSMISSION CABLES PTY. LIMITED, and a request to dismiss the opposition under regulation 5.5.

background

Application No. 592654 by LUMENYTE INTERNATIONAL CORPORATION (LUMENYTE) has been opposed by LIGHT TRANSMISSION CABLES PTY LIMITED (LIGHT) under section 59 of the Patents Act 1952. The hearing of this opposition, which commenced on 6 August 1992, has been adjourned pending the resolution of a request to amend the specification under section 104.

LUMENYTE filed its request to amend on 18 August 1992 and the granting of leave to amend was advertised in the Official Journal dated 5 May 1993. LIGHT filed its notice of opposition under section 104(4) on 6 August 1993 and served its statement of grounds and particulars on 8 November 1993. On 24 November 1993 LUMENYTE filed a request under regulation 5.5(1) to dismiss the opposition.

The matter was set down for hearing in Canberra on 2 February 1994. In a letter filed on 31 January 1994 LUMENYTE stated it wished to withdraw from the hearing in relation to its request for dismissal. LIGHT did not attend the hearing.

DECISION

The fact that LUMENYTE did not attend the hearing suggests to me it would like to withdraw its request under regulation 5.5(1). But there is no provision in the Patents Act 1990 for a request under regulation 5.5(1) to be withdrawn. Under regulation 5.5(3) the Commissioner has the power to dismiss the opposition whether or not the applicant has requested dismissal of the opposition. In the present situation I think this means I should seriously consider whether to dismiss LIGHT's opposition rather than summarily dismiss LUMENYTE's request.

I am satisfied there are no grounds for dismissing LIGHT's opposition under section 104(4) (General Steel Industries Inc v Commissioner for Railways (NSW) and others 112 CLR 125).

According to regulation 5.8(a)(1)(iii) LIGHT has 3 months from the date of this decision to file evidence-in-support of its opposition under section 104(4).

I make no award of costs as there was no hearing of the matter.

M. Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Halford & Co., Sydney

CaseChat Overview and Summary

In the matter of LUMENYTE International Corporation v Light Transmission Cables Pty Ltd, the dispute concerns an opposition by Light Transmission Cables Pty Ltd (Light) against a patent application (No. 592654) filed by LUMENYTE International Corporation (LUMENYTE). Light opposed the patent application under section 59 of the Patents Act 1952. LUMENYTE had previously sought to amend its specification, and Light subsequently filed its notice of opposition under section 104(4) and particulars. LUMENYTE then filed a request under regulation 5.5(1) to dismiss Light's opposition. The matter was set for a hearing, but LUMENYTE indicated it wished to withdraw its request to dismiss the opposition, and Light did not attend the hearing. The delegate of the Commissioner of Patents was tasked with determining whether Light's opposition should be dismissed and if LUMENYTE's request under regulation 5.5(1) should be summarily dismissed.

The legal issues before the delegate included whether the opposition by Light could be dismissed, whether the Commissioner had the power to dismiss the opposition irrespective of LUMENYTE's request, and whether there were any grounds to dismiss Light's opposition under section 104(4). The delegate noted that there was no provision in the Patents Act 1990 allowing for the withdrawal of a request under regulation 5.5(1). Instead, regulation 5.5(3) empowered the Commissioner to dismiss the opposition regardless of any such request. The delegate concluded that there were no grounds for dismissing Light's opposition under section 104(4), citing the precedent set in General Steel Industries Inc v Commissioner for Railways (NSW) and others.

The delegate decided not to summarily dismiss LUMENYTE's request under regulation 5.5(1) but to consider whether to dismiss Light's opposition on its merits. The delegate determined that Light's opposition should not be dismissed and that Light had three months from the date of this decision to file evidence-in-support of its opposition under section 104(4). No costs were awarded as the matter did not proceed to a full hearing.

In conclusion, the delegate ruled that Light's opposition to LUMENYTE's patent application was valid and not subject to dismissal under regulation 5.5(1). Light was granted the opportunity to provide further evidence in support of its opposition, while LUMENYTE's request to dismiss the opposition was effectively disregarded due to procedural limitations.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established